USPTO Patents Application 09902128

Code: AP.PRE.REQ

PTO/SB/33 (07-05)
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E-APPEAL BRIEF REQUEST FOR REVIEW

Docket Number (Optional)
T00053

hereby certify that this correspondence is being deposited with the
United States Postal Service with sufficient postage as first class mail
in an envelope addressed to "Mail Stop AF, Commissioner for
Patents, P.O. Box 1450. Alexandria. VA 22313-1450" [37 CFR 1.8(a)]

July 19, 2005

Signature,

Typed or printed
name

Kent B. Chambers

Application Number
09/902,128

Filed

July 10, 2001

First Named Inventor
Ryan Shillington

Art Unit
2184

Examiner

Yolanda L. Wilson

Applicant requests review of the final rejection in the above-identified application. No amendments are being filed
with this request.

This request is being filed with a notice of appeal.

The review is requested for the reason(s) stated on the attached sheet(s).
Note: No more than five (5) pages may be provided.

I am the

I I applicant/inventor.

I I assignee of record of the entire Interest
' ' See 37 CFR 3.7 1 . Statement under 37 <

(Fomn PTO/SB/96)

CFR 3.73(b) is enclosed.

I X I attorney or agent of record . 38,839
Registration number

I I attorney or agent acting under 37 CFR 1 .34,
Registration number if acting under 37 CFR 1 .34 _

Signature

Kent

B. Chambers

Typed or printed name

(512)

338-9100

Telephone number

July

19, 2005

Date

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Applicant(s):

Assignee:

Title:

Serial No.:
Examiner:
Docket No.:

E United States Patent and Trademark Office

Ryan Shillington, Will Scott, Dan Burton
Trilogy Development Group, Inc.

SYSTEM AND METHOD FOR REMOTELY DEBUGGING
APPLICATION PROGRAMS

09/902,128
Yolanda L. Wilson
T00053

Filed: July 10, 2001

Group Art Unit: 2184
Customer No.: 33438

Dear Sir:

Austin, Texas
July 19, 2005

PRE-APPEAL BRIEF ARGUMENTS

This paper accompanies the Pre- Appeal Brief Request for Review and sets forth a
succinct, concise, and focused set of arguments for which the review is being requested.

CLAIM STATUS

Claims 1-44 are pending.

Claims 1-44 stand rejected under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent
No. 6,668,369, issued to Krebs (referred to herein as "Krebs'').

ARGUMENTS

Applicants respectfully submit that the Examiner's rejection contains factual errors and,
thus, the Examiner has failed to satisfy the PTO's burden of establishing a prima facie rejection.

Krebs teaches that:

The present invention provides a client-side software debugging tool for
viewing dynamic code. Accordingly, the present invention provides a tool for
assisting a programmer in locating errors in DHTML and scripts for generating
dynamic code. Whereas current debugging tools, such as the "View Source"
command of popular Web browser software, permit a programmer to view only

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S/N: 09/902,128

static code as it is received from a Web server, e.g., a script, the present invention
permits the programmer to view the dynamic code generated at the cHent by the
script. Id., col. 2, hnes 54-63.

The Examiner noted in para. 39 of the Final Office Action that Krebs teaches that a
"user's computer's web browser software receives a DHTML source file from a server." Krebs,
col. 4, lines 31-32. Thus, the DHTML source file is initially located on a server and transferred
to a user's computer. The Examiner has interpreted the DHTML source file as the 'application
program' of the present invention. However, at issue is not where the source file was originally
located and transferred to, at issue is where the application program resides during debugging.
Significantly, Krebs teaches that all of the debugging takes place using software on the user's
computer . The present invention teaches that the application program resides on a server and is
invoked/executed while residing on the server during debugging from a workstation. The
workstation is remote from the server.

Krebs teaches that all debugging of software takes place using debugging software on the
user's computer and the software being debugged also resides on the user's computer . After a
"user's computer's web browser software receives a DHTML source file from a server",
Krebs teaches that

The source file contains a script for generating dynamic code at the user's
computer. The web browser then runs the script to generate the dynamic code

and stores the dynamic code in intemal variables of the browser as known in the
prior art, as shown at step 54. The web browser then displays its interpretation of
the dynamic code to a user as part of a web page, as is known in the prior art, as
shown at step 58. M, col. 4, lines 32-39.

Thus, Krebs teaches that the DHTML source file is run on the user's computer (not the
server from which the DHTML was originally transferred) because the DHTML source file has
been transferred to the user's computer, and the web browser, which runs the script to generate
the dynamic code and store the dynamic code in intemal variables, resides on the user's
computer.

Krebs also teaches that:

The user may then use a software debugging tool in accordance with
the present invention as follows. The user first executes the software

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debugging tool, as shown at step 62. This may be achieved in a variety of
ways as discussed above. For example, if the debugging tool is integrated into
the browser, the user may simply select an appropriate menu option.
Alternatively, script commands may be included in the source file to trigger
the debugging tool. For example, the "onclick" command could be used to
invoke the debugging tool upon the user's depression of the "shift" key and double
clicking of a mouse button. The software debugging tool then identifies the
dynamic code generated at the user*s computer as shown at step 66, e.g., by
reference to the variables of the web browser that are used to store the dynamic
code, as discussed above. Id., col. 4, lines 39-43.

Thus, Krebs teaches that the software debugging tool resides on the same user's computer
that the DHTML source file resides on. Accordingly, Krebs does clearly teach that aU
debugging of software takes place using debugging software on the user's computer and the
software being debugged also resides on the user's computer . Applicants respectfully submit
that the Examiner made a factual error in stating that Krebs "discloses executing the
application program on the server when the application program is invoked fi-om the
workstation." Applicants respectfiiUy submit that this error is a material error that undercuts the
remaining points of the Examiner's prima facie case.

The Examiner stated in the Final Office Action, para. 39, and Apphcants agree, that the
preambles of the independent claims is to be taken into consideration when interpreting the
claims. Each independent claim of the present application relates to "debugging an application
program from a workstation, wherein the application program resides on a server that is remote
from the workstation." The "workstation" and the "server" are clearly two different computer
systems, and the independent claims also explicitly state that the "server [] is remote from the
workstation."

The Examiner also states that "Krebs does in fact have what is disclosed in the
preamble." Final Office Action, para. 39. "The application program is the DHTML source file,
that is retrieved from the server, of the webpage seen in the web browser cited in colunrn 4, lines
30-37" of Krebs. Final Office Action, para. 39.

However, although the Examiner has identified the DHTML source file originates from a
separate computer (server) from the executing computer (the user's computer). Applicants
respectfiiUy submit that Krebs fails to teach (1) "invoking the application program from the

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workstation via a network interface." Claim 1 . The Application Program, which "resides on a
server that is remote from the workstation", is invoked by the workstation "via a network
interface." Claim 1. Thus, the workstation is remotely invoking the application program.
Krebs clearly teaches that the same computer (the user's computer) on which the DHTML source
file resides is also the computer that runs the DHTML source file. This is not the case with the
present invention, and, thus, Krebs does not teach this aspect of the invention. Claim 9 also
clearly recites " executing the application program on the server when the application program is
invoked from the workstation. " Claim 17 recites "means for invoking the application program
from the workstation ." Claim 21 recites "means for executing the application program on the
server when the appHcation program is invoked from the workstation ." Claim 29 recites "a user
interface operable to allow a user to invoke the application program from the workstation ."
Claim 36 recites "means for executing the application program on the server when the
application program is invoked from the workstation ."

Thus, in contrast to the teachings of Krebs, the application program of the present
invention resides on a server and is invoked from a workstation, wherein the server and
workstation are remotely located, and, therefore, separate computers.

As established above. Applicants respectfiiUy submit that Krebs clearly teaches that all
debugging of software takes place using debugging software on the user's computer and the
software being debugged also resides on the user's computer . In contrast to the teachings of
Krebs, debugging of the application program as set forth by the claims defining the present
invention does not take place on the computer (server) executing the application program, such
debugging takes place on a remotely located workstation. For example, claim 1 recites:

displaying a user frame at the workstation that includes information generated by

the application program;
providing a debug view option at the workstation for generating a debug frame of

the application program; and
displaying the debug frame at the workstation when the debug view option is

selected, wherein the debug frame includes information about one or more

components of the application program.

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S/N: 09/902,128

Independent Claims 9, 17, 21, 29, and 36 likewise recite debugging operations "at the
workstation".

Thus, in summary, Krebs teaches that all debugging of software takes place using
debugging software on the user's computer and the software being debugged also resides on the
user's computer which is in contrast to the claimed invention where the application is
invoked/executed from a workstation remotely located from the server on which the application
program resides and the debugging set forth in the claims takes place on the remotely located
workstation.

Accordingly, Applicants respectfully submit that the Examiner has made a material,
factual error in interpreting Krebs and accordingly the Examiner has failed to establish a prima
facie case.

In light of the above remarks, Applicants respectfully request withdrawal of the
rejections.

I hereby certify that this correspondence is being deposited with
the United States Postal Service as First Class Mail in an envelope
addressed to: Mail Stop Amendment, COMMISSIONER FOR
PATENTS, P.O. Box 1450, Alexandria, VA 22313-1450, on July
19, 2005.

Attorney for Applicant(s) Date of Signature

Respectfully submitted.

Kent B. Chambers
Attomey for Applicant(s)
Reg. No. 38,839

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